Federal office rules against University of Wisconsin in fight over stem cell patent

Wisconsin loses round in stem cell patent battle

MADISON, Wis. — Consumer groups challenging a key patent covering embryonic stem cell research pioneered at the University of Wisconsin-Madison have won an appeal overturning an earlier rejection of their claims.

The U.S. Patent and Trademark Office ruled Wednesday in favor of the two consumer groups that challenged one of the patents held by the Wisconsin Alumni Research Foundation. Two other patents, which also cover discoveries made by UW-Madison scientist James Thomson, were not challenged and are not affected by the decision.

Consumer Watchdog in Santa Monica, Calif., and the Public Patent Foundation in New York City argued that Thomson’s work should not qualify for patents and that patent enforcement has hindered U.S. stem cell research.

The patent office ruled against the groups in 2008 but last week agreed with their argument that Thomson’s work should not have received a patent because other scientists could have done the same that if they had his funding and access to human embryos.

“This is a major victory for unfettered scientific research that could lead to cures for some of the most debilitating diseases,” said John M. Simpson, stem cell project director for Consumer Watchdog, which was known as the Foundation for Taxpayer and Consumer Rights when it originally brought the complaint.

Wednesday’s ruling can be appealed.

WARF, a private, nonprofit patent management organization that controls the university’s patents, said in a statement Monday it intends to fight the decision. It has licensed the patent to Geron Corp.

“We are confident that WARF will make a strong case in support of the patentability of these claims in continued examination,” said David Earp, Geron’s senior vice president of business development.

The three patents in question expire in 2015, but Geron said in a statement it was confident that subsequent patents will protect technologies it has developed well beyond then.

Thomson was the first to isolate embryonic stem cells — which have great medical potential because they can turn into any type of cell in the body — in the 1990s. The discovery ushered in a still-raging controversy over whether scientists should be allowed to destroy days-old human embryos in the search for cures to diseases such as Parkinson’s and juvenile diabetes.

The research foundation obtained patents that cover the cells themselves and the techniques used to isolate them. The group has required researchers to obtain licenses to use them, which some critics have blamed for delaying research and sending investment overseas.